WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deluxe Gain Holdings Limited v. Milton Shaw, FCIS
Case No. D2019-2870
1. The Parties
The Complainant is Deluxe Gain Holdings Limited, China, represented by Bryan Cave Leighton Paisner, United States of America (“United States”).
The Respondent is Milton Shaw, FCIS, United States.
2. The Domain Names and Registrar
The disputed domain names <alexanderdolls.com> and <madamalexander.com> are registered with Wild West Domains, LLC (the “Registrar”). These domain names are each referred to in this decision individually as a “Disputed Domain Name” and together as the “Disputed Domain Names”.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2019. On November 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On November 25, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to the Center’s request for amendment of December 4, 2019, the Complainant filed an amended Complaint on December 6, 2019.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 10, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was December 30, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 6, 2020.
The Center appointed Nick J. Gardner, Carol Anne Been, and Jane Seager as panelists in this matter on February 11, 2020. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The relevant facts are straightforward and can be summarized as follows.
The Complainant is a private company registered in Hong Kong, China. It manufactures and sells via retail outlets a range of dolls under the brand name “Madame Alexander”. The Complainant says the origins of the “Madame Alexander” range of dolls date back to 1923, but the Panel has been provided with no information about this background. The Complainant also says that the name Madame Alexander “has been used consistently in commerce for over 10 years to identify [the Complainant’s] dolls”. The Panel also notes that the Respondent’s website (see below) contains a database with various details of specific Madame Alexander dolls going back to 1930.
The Complainant owns various registered trademarks for MADAME ALEXANDER – the earliest of these in evidence being United States trademark registration no. 2410485, registered on December 5, 2000 in respect of figurines and various other items. The Complainant also relies upon United States registration no. 4986240, which was registered on June 28, 2016 in respect of dolls and other items and claims a first use date for dolls of 1930. These trademarks are referred to collectively in this decision as the “MADAME ALEXANDER trademark”. The Complainant also owns United States trademark registration no. 3337972, MADAME ALEXANDER DOLL CLUB, registered on November 20, 2007, claiming first use for doll collector’s clubs in 1986. The Panel notes that each of the trademark certificates in evidence designates Alexander Doll Company Inc. a Delaware corporation, as the trademark owner. The Panel has checked the current details on file at the United States Patent and Trademark Office for these trademarks and has confirmed they are currently registered in the name of the Complainant.
The Disputed Domain Names were both registered in 1998 (<madamalexander.com> on March 17, 1998 and <alexanderdolls.com> on April 7, 1998). The Disputed Domain Names both resolve to websites with substantially the same contents – it appears there are very slight differences between the two websites but for practical purposes their content is identical and the Panel will treat them as a single website (the “Respondent’s Website”). The Respondent’s Website provides what is in effect a database of open market values attributable to various models of Alexander Doll. There appear to be over 6,000 dolls listed with dates going back to 1930. The Respondent’s Website contains a significant amount of dynamic advertising content. It also contains links to what appear to be similar websites listing Barbie doll values, and Steiff bear values. There are also other links to databases of online movies as well as two links that state they are to lists of “sex offenders” in Texas and Florida, respectively.
5. Parties’ Contentions
The Complainant says that both of the Disputed Domain Names are “essentially identical” to its MADAME ALEXANDER trademark.
The Complainant says that the Respondent has no rights or legitimate interests in the Disputed Domain Names. The Complainant asserts that the Respondent does not use the Disputed Domain Names in connection with any bona fide offering of goods or services, nor for any noncommercial or fair use. The Complainant claims that the Respondent registered the Disputed Domain Names in order to trade upon the Complainant’s reputation and goodwill. The Complainant notes that the Respondent’s Website features click-through advertising, including links to the Complainant’s competitors. The Complainant further states that the Respondent is not in any way associated with the Complainant and has not been authorized to make use of the Complainant’s trademark. The Complainant notes that the Respondent does not have any registered trademark rights in the terms “madame alexander”. The Complainant submits that the Respondent has not been commonly known as “Madame Alexander”.
The Complainant says that the Respondent’s registration and use of the Disputed Domain Names is in bad faith. The Complainant submits that the Respondent plainly knew of the Complainant’s long and continuous use of its MADAME ALEXANDER trademark at the time of registration of the Disputed Domain Names. It further says “Respondent utilizes infringing domain names to divert potential customers away from Complainant and its authentic goods and services, and toward Respondent’s services that are unrelated to Complainant’s. Respondent’s conduct plainly has caused and will continue to cause Complainant commercial detriment, in terms of consumer confusion and damage to its reputation if Respondent’s products, devices, or services are not the same as, or do not perform in the same manner as Complainant’s products, devices, and services”.
No Response has been filed.
6. Discussion and Findings
6.1. Preliminary Matters
The Panel notes that no communication has been received from the Respondent. However, given that notification of the Complaint was duly sent to all of the post or email addresses disclosed by the Registrar, the Panel considers that this satisfies the requirement in paragraph 2(a) of the Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
6.2. Substantive Matters
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) the Disputed Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has rights in the MADAME ALEXANDER and MADAME ALEXANDER DOLL CLUB trademarks.
The Panel finds that each of the Disputed Domain Names is confusingly similar to these trademarks.
The Disputed Domain Name <madamalexander.com> comprises a typographical variation or misspelling of the Complainant’s trademark, omitting the letter “e” from the word “madame” making up the Complainant’s trademark. The Panel agrees in this regard with the approach set out in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9, namely:
“A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.”
The Disputed Domain Name <alexanderdolls.com> incorporates dominant elements of the Complainant’s MADAME ALEXANDER DOLL CLUB trademark (the element “alexander doll” in the singular), such that the mark is recognizable in the Disputed Domain Name. See WIPO Overview 3.0, section 1.7:
“[…] in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”
It does not matter for the purposes of this element that the Disputed Domain Names were registered before the trademarks relied upon by the Complainant were registered – the Panel agrees with the consensus approach as explained in WIPO Overview 3.0, section 1.1.3:
“While the UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed.”
Registration of a domain name before a complainant acquires trademark rights does not prevent a finding of identity or confusing similarity under the UDRP; however, in such circumstances it may be difficult to prove that the domain name was registered in bad faith under the third element of the UDRP, as discussed under bad faith below.
It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, may be disregarded for the purpose of determining whether the Disputed Domain Names are identical or confusingly similar to the Complainant’s trademarks. See Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly, the Panel finds that the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel does not agree with the Complainant’s characterization of the Respondent’s Website as being simply intended to lure customers away from the Complainant. As best the Panel can tell having reviewed the Respondent’s Website, it appears to provide a detailed reference source of values attributable to sales of second hand examples of the Complainant’s dolls in the open market place. The Respondent’s Website appears to be a resource which the Panel could well imagine is useful to collectors of the Complainant’s dolls. It also provides links to similar sites for other collectable dolls. As such it appears to the Panel to be somewhat analogous to a fan site and the Panel proposes to draw on such parallel (notwithstanding for this element the rather incongruous links to what are said to be listings of sex offenders and which appear to be wholly out of context given the remaining content of the Respondent’s Website.
The question is whether a site of this nature establishes a legitimate interest.
“Does a fan site support respondent rights or legitimate interests in a domain name?
“Where a domain name which is identical to a trademark (i.e., <trademark.tld>) is being used in relation to a genuine noncommercial fan site, panels have tended to find that a general right to operate a fan site (even one that is supportive of the mark owner) does not necessarily extend to registering or using a domain name that is identical to the complainant’s trademark, particularly as the domain name may be misunderstood by Internet users as being somehow sponsored or endorsed by the trademark owner. (See discussion of inter alia misrepresentation at [WIPO Overview 3.0, section 2.5].) In such cases, where the domain name is identical to the trademark, panels have also noted that this prevents the trademark holder from exercising its rights to the mark and so managing its presence on the Internet, including through a corresponding email address.
Where the domain name is not identical to the complainant’s trademark, i.e., it comprises the mark plus an additional, typically descriptive or laudatory term (e.g., <celebrity-fan.tld>), noting the factors listed above at [WIPO Overview 3.0, section 2.5.2], panels tend to find that the respondent has a legitimate interest in using the mark as part of the domain name for a fan site if such use is considered to be fair in all of the circumstances of the case. Where such a site is noncommercial in nature, this would tend to support a finding that the use is a fair one.”
In the present case, the Panel considers first that the Disputed Domain Names do not contain suitable modifying terms so as to avoid creating an impression that the Disputed Domain Names are somehow sponsored or endorsed by the Complainant; quite the contrary, their nature creates an impression of affiliation. The Panel notes in this regard that the Respondent’s Website does not contain anything by way of a disclaimer clarifying its lack of relationship with the Complainant. Secondly, the Respondent’s Website contains a substantial amount of dynamically placed advertising and therefore cannot be characterized as being noncommercial in nature. Thirdly, it contains a number of unrelated (and possibly commercial) links.
The Respondent has not come forward to otherwise assert any rights or legitimate interests in the Disputed Domain Names.
Accordingly, the Panel finds that the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
In the present case, the Panel considers that paragraph 4(b)(iv) of the Policy applies. Each of the Disputed Domain Names is confusingly similar to trademarks in which the Complainant has rights. Internet traffic is likely to be attracted to the Respondent’s Website as a result. The Respondent manifestly registered the Disputed Domain Names because they referenced the Madame Alexander doll range. The Panel is prepared to infer in the Respondent’s favour that it may have intended to operate a resource site providing information for collectors of the Complainant’s dolls. The Panel however considers that at least some notion of commercial gain was the motivation given the advertising present on the Respondent’s Website.
The Panel is also of the view that the inclusion on the Respondent’s Website of links purporting to relate to lists of sex offenders is likely to be detrimental to the Complainant’s image in the eyes of the relevant public and, absent an explanation of how these links came to be present, provides a further basis for a finding in the Complainant’s favor.
The Panel has also considered whether the fact that the registration dates of the Disputed Doman Names precede the dates of the registered trademarks relied upon by the Complainant alters its analysis. The Panel is hampered by the fact that the Complainant has not fully explained the history of its Madame Alexander dolls – which clearly dates back to long before the Disputed Domain Names were registered. The Complainant says that “Respondent plainly knew of Complainant’s long and continuous use of its MADAME ALEXANDER trademark at the time of registration of the disputed domain name.”
The Disputed Domain Names were registered in 1998, while the Complainant claims to have used the MADAME ALEXANDER trademark to identify its dolls “for over 10 years”. However, the Complainant’s own website states that the history of Madame Alexander dolls dates back nearly 100 years and the earliest “first use” date claimed in its trademark applications is 1930.
Taking the evidence as whole it seems to the Panel that prior to the Complainant acquiring its interest in the Madame Alexander doll range, and registering various trademarks, there must have been a predecessor business of some kind, manufacturing and selling Madame Alexander dolls since 1923 or 1930. This appears to be consistent with what the Complainant goes on to say, as follows:
“Further, Respondent registered the domain names “www.madamalexander.com” and “www.alexanderdolls.com” on March 17, 1998 and April 7, 1998, respectively, decades after Complainant and its predecessors began using the MADAME ALEXANDER trademark in 1923 or the MADAME ALEXANDER DOLL CLUB trademark in 1961. It would stretch credibility for Respondent to deny that it was aware of Complainant and its MADAME ALEXANDER trademark at the time of registration of the disputed domain name, or any time thereafter.”
Taking the evidence as a whole the Panel is prepared to accept that the Respondent’s registration of the Disputed Domain Names was made with clear knowledge of the goodwill then associated with the Madame Alexander brand at that time, and that the timing does not avoid a finding of bad faith.
In reaching this conclusion the Panel again notes that the Respondent has not filed a Response and hence has not availed itself of the opportunity to present any case rebutting the allegation of bad faith.
The Panel would also observe that nothing in this decision is directed at the merits or otherwise of the Respondent. The Panel notes that the applicability of the Policy and hence this decision is directed at the Respondent providing a database of, inter alia, information about the values of the Complainant’s dolls by means of the Disputed Domain Names and not the mere provision of a database itself.
As a result the Panel finds that the third condition of paragraph 4(a) of the Policy has been fulfilled.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names <madamalexander.com> and <alexanderdolls.com> be transferred to the Complainant.
Nick J. Gardner
Carol Anne Been
Date: February 25, 2020